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Tuesday, 24 April 2012

In Tulane Education Fund v Comptroller General of Patents [2012] EWHC 932 (Pat) Roger Wyand QC, sitting on 17 April as a Deputy Judge of the Patents Court, England and Wales, heard an appeal against the refusal of a UK Intellectual Property Office hearing officer to reinstate a supplementary protection certificate following the applicant's failure to pay the prescribed fees in time.

Tulane's basic patent for Cetrorelix expired on 10 July 2008 and the SPC was due to come into effect the next day. Dennemeyer & Co had been instructed to pay Tulane's SPC fees. Having failed to pay the prescribed fee within the prescribed period, Dennemeyer sought to pay it within the six months immediately following the prescribed period in reliance on the Patents Act 1977 Sch.4A para.5, using the electronic patent, design and trade marks renewal system at the same time as it made 3,075 other payments for various other patent renewals. Unfortunately the SPC number was converted into a patent number by the IPO's computer system, which did not recognise it as a valid patent number, with the result that the payment was rejected. Dennemeyer did not realise which application had been rejected because the reference number had been changed, and the error was realised only after the period for late payment for the prescribed fee had expired.

Tulane then applied to the Intellectual Property Office for a correction of an irregularity under the Patents Rules 2007 r.107 or for the SPC to be brought into effect under s.28(1) of the Act ("Where a patent has ceased to have effect by reason of a failure to pay any renewal fee, an application for the restoration of the patent may be made to the comptroller within the prescribed period"). The hearing officer rejected Tulane's applications and the company appealed.

In its appeal Tulane submitted that (1) the IPO erred in relying on a computer system which erroneously changed the reference number of the SPC and rejected it, and in failing to send an adequate response in relation to the rejection of the payment; (2) the hearing officer should have restored the lapsed certificate under s.28 since that provision applied to SPCs as well as patents; (3) Sch.4A para.5 was ultra vires as it was intended to implement Regulation 1768/92 and a requirement for a single payment could not fall within the provision in Art.12 of the Regulation allowing "annual fees".

Roger Wyand QC dismissed the appeal. In his view the electronic payment system used by Dennemeyer was intended for patent payments and not for SPC payments. A computer program's attempt to interpret a reference number by converting it into a format appropriate for the payments for which the system was intended could not therefore be described as an error. The IPO was obliged to send a rejection, quoting the number used in the payment application, when it rejected that payment and that failure did contribute to the failure to pay the appropriate fee in time. However, the failure to identify the payment that was rejected accurately did not actively bring about Dennemeyer's failure to pay the fee: Dennemeyer had not followed the Rules and paid via the appropriate system for a SPC -- and it could have worked out the change in reference number.
In terms of causation Roger Wyand QC added that, even if the error had not occurred, it was doubtful that the correct fee would have been paid in time. Accordingly, the IPO's error was not sufficiently causative to enable the application of r.107(3). For the avoidance of all doubt, he added that s. 28 had no application in the case of SPCs.

Bianca-Lucia Vos and Klemens Stratmann of Hoffmann-Eitle have generously provided a copy of a recent decision of the Higher Regional Court o...

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